DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/18/2026 has been entered.
Election/Restriction
In a telephone call dated 08/13/2025, Applicant was required to select one metal, M, specify what type of ring the two substituents, RE are joined to form, and specify which ring of Formula II is coordinated to metal, M.
In this call, a species wherein M is iridium and wherein two RE are joined to form a 6-membered, aromatic ring which is further coordinated to the metal M was elected. This will be herein after referred to as Species I.
Species I was not identified.
Under MPEP 803.02, the search was expanded to find an examinable species.
A species wherein M is iridium, one of RE is heteroaryl, another one of RE is the metal M, and the two are joined to form a ring fused to ring E is being examined. This species will herein after be referred to as Species II.
Species II, drawn to claims 1-2, 5, 11-13, 17, 20, and 24-26, is examined herein.
Response to Amendment
In the response filed 05/18/2026, the claims were amended.
These amendments are hereby entered.
In light of Applicant’s amendments to the claims, the objection to claims 1, 17, 20, and 27 is withdrawn by the Office.
In light of Applicant’s amendments to the claims, the rejection under 35 U.S.C. 112(b) of claims 1-2, 5, 8-9, 11-13, 17, and 20-27 as failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention, and the rejections under 35 U.S.C. 103 of claims 1-2, 5, 8-9, 11-13, 17, 20-23, 25, and 27 as being unpatentable over Kwon et al. (US 2022/0069237 A1), and claim 26 as being unpatentable over Kwon above and further in view of Yi et al. (US 2021/0288268 A1) are withdrawn by the Office.
Claims 1-20 were originally filed.
Claims 21-30 have been added.
Claims 3-4, 7, 10, 14-15, 18-19, 23, and 28 are canceled.
Claims 1, 8-9, 17, 20, 22, and 25-27 are instantly amended.
Claims 1-2, 5-6, 8-9, 11-13, 16-17, 20-22, 24-27, and 29-30 are pending in the application, of which claims 6, 8-9, 16, 21-22, 27, and 29-30 are withdrawn from consideration.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Objections
Claims 1, 17, and 20 contain the following structure.
PNG
media_image1.png
548
568
media_image1.png
Greyscale
This structure is objected to because the ring comprising substituent RC only has two double bonds and forms a cyclohexadiene ring rather than an aromatic benzene ring. Examiner believes this to be an error because such a structure does not appear to represent the claimed invention. Upon response, please either add the missing double bond (MPEP 2163.07 II. – Obvious Errors) or make it of record that no error is present and Applicant means to claim a cyclohexadiene ring.
If Applicant intends to claim a cyclohexadiene ring, several dependent claims may be subject to a rejections under 35 U.S.C. 112(b) and/or 112(d).
Examiner notes that this structure is also present in at least paragraph [0072] of the instant specification and other dependent claims withdrawn from consideration.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2, 5, 11-13, 17, 20, and 24-26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to independent claims 1, 17, and 20, the claims contain variable T, however, this variable is not defined in the instant claims or specification.
In continuing examination, this variable is being interpreted as having the same definition as T’, which is an element selected from nitrogen, boron, or phosphorus.
Claims 2, 5, 11-13, and 24-26 are rejected by virtue of dependency.
Please note that this error is also present in other dependent claims withdrawn from consideration.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 5, 11-13, and 25 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ji et al. (US 2021/0115052 A1).
With respect to claim 1, Ji discloses the compound below (page 79).
PNG
media_image2.png
372
426
media_image2.png
Greyscale
This compound meets the requirements of condition (b) of instant Formula I when A is a monocyclic 6-membered heterocyclic (pyrimidine) ring, B is represented by Formula II, Z1 is a nitrogen atom, Z2 is a carbon atom, K1 and K2 are direct bonds, X1 through X7 are all carbon atoms, T’ is a nitrogen atom, two RA are joined to form a substituted, condensed benzene ring, RC and RD are not present, and RE represents the center metal atom, iridium, and a heterocyclic ring (ring A), and the two RE are joined to form a 5-membered ring which is fused to ring E.
With respect to claims 11 and 12, Ji teaches the compound of claim 1, and the compound has the formula Ir(LA)2(LC), wherein p is 2 and r is 1.
With respect to claim 13, Ji teaches the compound of claim 11, and ligand LC is represented by the instant, first embodiment when Ra1 and Rc1 are each 3-pentyl and Rb1 is a hydrogen atom.
With respect to claim 25, Ji teaches the compound of claim 1, and T’ is not directly bonded to a ring that coordinates to the metal, M.
The applied reference has a common assignee and applicant with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ji et al. (US 2021/0115052 A1) as applied above.
With respect to claim 17, Ji discloses an organic light emitting device comprising an anode (115), a cathode (160), and an organic layer between the electrodes comprising a ligand LA of Formula I (Figure 1 and paragraph 0099), such as the compound below (page 79).
PNG
media_image2.png
372
426
media_image2.png
Greyscale
This compound meets the requirements of condition (b) of instant Formula I when A is a monocyclic 6-membered heterocyclic (pyrimidine) ring, B is represented by Formula II, Z1 is a nitrogen atom, Z2 is a carbon atom, K1 and K2 are direct bonds, X1 through X7 are all carbon atoms, T’ is a nitrogen atom, two RA are joined to form a substituted, condensed benzene ring, RC and RD are not present, and RE represents the center metal atom, iridium, and a heterocyclic ring (ring A), and the two RE are joined to form a 5-membered ring which is fused to ring E.
Ji teaches that the disclosed compounds have a lowest triplet excited state suitable for emitting near infrared light, which make them useful for display and lighting applications (paragraph 0156).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to use the compound in an organic light emitting device in order to obtain infrared light, as taught by Ji.
With respect to claim 20, Ji discloses a consumer product comprising an organic light emitting device comprising an anode (115), a cathode (160), and an organic layer between the electrodes comprising a ligand LA of Formula I (Figure 1 and paragraph 0099), such as the compound below (page 79).
PNG
media_image2.png
372
426
media_image2.png
Greyscale
This compound meets the requirements of condition (b) of instant Formula I when A is a monocyclic 6-membered heterocyclic (pyrimidine) ring, B is represented by Formula II, Z1 is a nitrogen atom, Z2 is a carbon atom, K1 and K2 are direct bonds, X1 through X7 are all carbon atoms, T’ is a nitrogen atom, two RA are joined to form a substituted, condensed benzene ring, RC and RD are not present, and RE represents the center metal atom, iridium, and a heterocyclic ring (ring A), and the two RE are joined to form a 5-membered ring which is fused to ring E.
Ji teaches that the disclosed compounds have a lowest triplet excited state suitable for emitting near infrared light, which make them useful for display and lighting applications (paragraph 0156).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to use the compound in the organic layer of an organic light emitting device, and incorporate the organic light emitting device into a consumer product in order to obtain infrared light, as taught by Ji.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 5, 11-13, 17, 20, and 24-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5, 11-13, 17, 20, and 23-25 of copending Application No. 17/985,088 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically,
The compounds of instant claim 1 all fall within the limitations of the compound of claim 1 of ‘088. This is further supported by the compounds of claim 23 of ‘088 which demonstrates the overlap clearly encompasses compounds of the instant species.
The limitations on R groups of instant claim 2 are identical to the limitations on R groups of claim 2 of ‘088.
The limitations on RA, RC and RD of instant claim 5 are identical to the limitations on RA, RC and RD of claim 5 of ‘088.
The chemical formulae of instant claims 11 and 12 are identical to the chemical formulae of claims 11 and 12 of ‘088.
The ancillary ligands LB and LC of instant claim 13 are met by the ancillary ligands LB and LC of claim 13 of ‘088
The device of instant claim 17 is met by claim 17 of ‘088.
The consumer product of instant claim 20 is met by the consumer product of claim 20 of ‘088.
Instant claims 24 and 25 are analogous in scope to claims 24 and 25 of ‘088.
Instant claim 26 is met by the independent claim of ‘088.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL SIMBANA whose telephone number is (571)272-2657. The examiner can normally be reached Monday - Friday, 8:00 A.M. - 4:30 P.M..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RACHEL SIMBANA/Primary Examiner, Art Unit 1786
Prosecution Insights